Ex parte Brinzer

Board of Patent Appeals and Interferences

May 17, 1999

08040053 (B.P.A.I. May. 17, 1999)

Application for patent filed March 30, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER BRINZER
__________
Appeal No. 96-2518
Application 08/040,0531
__________
ON BRIEF
__________
Before KRASS, FLEMING, and GROSS, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 20, all of the claims pending in the
application.
Appeal No. 96-2518
Application No. 08/040,053
2
The invention is directed to a method and apparatus for
monitoring an automation system and a technical process which
is monitored and controlled by the automation system. More
particularly, the invention is set forth in representative
independent claim 1, reproduced as follows:
1. A method for monitoring an automation system and a
technical process monitored and controlled by the automation
system, comprising steps of:
transmitting a message from the automation system to an
observation system when a fault in the automation system
occurs at a location;
accessing important planning and design data of the
automation system, said planning and design data comprising at
least information about locations related to all possible
codes transmitted by the automation system;
determining the location of the fault in the automation
system by comparing a code of said transmitted message with
the accessed planning and design data; and
displaying a result of the determination on a display
unit, wherein the determined location of the fault in the
automation system is first displayed coarsely and then in at
least one other step in a more detailed manner.
The examiner relies on the following references:
Woods et al. 4,816,208 Mar. 28, 1989
(Woods)
Walter et al. 5,189,394 Feb. 23, 1993
(Walter)
Appeal No. 96-2518
Application No. 08/040,053
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Claims 1 through 20 stand rejected under 35 U.S.C. § 112,
first paragraph, as relying on a non-enabling disclosure and
on an inadequate written description.
Claims 1 through 20 stand further rejected under 35
U.S.C.
§ 103. As evidence of obviousness, the examiner cites Walter
with regard to claims 1 through 5, 7 through 18 and 20, adding
Woods with regard to claims 6 and 19.
Reference is made to the brief and answer for the
respective positions of appellant and the examiner.
OPINION
After careful consideration of the evidence before us, we
will sustain the rejection of claims 1 through 20 under 35
U.S.C. § 103 but we will not sustain the rejection of claims 1
through 20 under 35 U.S.C. § 112, first paragraph.
Turning first to the non-enablement rejection, the
examiner contends that the
specific manner in which the processor evaluates
messages transmitted by the automation system by
comparing a code of the messages indicating a
location of a fault in the automation system with
the stored planning and design data of the
automation system, and as a result of such
determination or evaluation, displaying the results
coarsely, and then in more detail is not readily
Appeal No. 96-2518
Application No. 08/040,053
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apparent from the specification nor the drawings
[Answer-page 3]
To comply with the enablement clause of the first
paragraph of 35 U.S.C. § 112, the disclosure must adequately
describe the claimed invention so that the artisan could
practice it without undue experimentation. In re Scarbrough,
500 F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974); In re
Brandstadter, 484 F.2d 1395, 1407, 179 USPQ 286, 295 (CCPA
1973); In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA
1962). If the examiner had a reasonable basis for questioning
the sufficiency of the disclosure, the burden shifted to
appellant to come forward with evidence to rebut this
challenge. In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227,
232 (CCPA 1973); In re Ghiron, 442 F.2d 985, 992, 169 USPQ
723, 728 (CCPA 1971). However, the burden was initially on
the examiner to establish a reasonable basis for questioning
the adequacy of disclosure. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563 (CCPA 1982).
We find that the examiner in the instant case did not
have a reasonable basis for questioning the sufficiency of the
disclosure. The level of skill in the computer arts is very
high and we find it unreasonable that one skilled in such arts
Appeal No. 96-2518
Application No. 08/040,053
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would have had any difficulty whatsoever in evaluating
messages by comparing codes received from a fault location
with stored data. The display of data as a result of such a
comparison and zooming in on the display to show greater
detail would also have been well within the skill of the
artisan in this complex art. We find no need for a “computer
program, detail circuitry, or flow-charts,” mentioned by the
examiner [Answer-page 3] as an apparent necessity for
overcoming a charge of insufficient disclosure. The
operations recited and the results sought by the instant
claimed subject matter are, in our view, of such a
straightforward variety that no specific program, flow chart
or circuitry would have been needed by the artisan in order to
practice the claimed invention without undue experimentation.
Accordingly, the examiner has not raised a reasonable
challenge, within the meaning of 35 U.S.C. § 112, first
paragraph.
With regard to a lack of support under the written
description requirement of 35 U.S.C. § 112, the examiner
alleges that there is no support in the disclosure as filed
Appeal No. 96-2518
Application No. 08/040,053
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for a display which displays results of the evaluation first
“coarsely” and then in a more “detailed” manner.
Appellant admits that these particular words were not
used in the original disclosure. However, in order to
determine compliance with the written description portion of
the first paragraph of 35 U.S.C. § 112, a proper inquiry
pertains to whether the disclosure (i.e., the specification,
claims and drawings as originally filed) reasonably conveys to
the artisan that the inventor had possession at that time of
that which is now claimed. Literal support in the disclosure
for the terms of the claims challenged by the examiner is not
necessary in order to show such possession. In re Wright, 866
F.2d 422, 425, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989); In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
While the original disclosure here did not use the terms
“coarse” and “detailed,” it is clear from the specification,
at page 9, bottom of the page, that appellant had possession
of the invention now claimed since there is a reference to
“precisely” locating the error “to have a closer look.”
Appeal No. 96-2518
Application No. 08/040,053
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Therefore, it is clear that appellant had disclosed a coarse
display and then a display in a more detailed manner.
Accordingly, we will not sustain the rejection of the
claims under 35 U.S.C. § 112, first paragraph.
We now turn to the rejections under 35 U.S.C. § 103 based
on prior art.
We will sustain these rejections because, in our view,
the examiner has established a case of prima facie obviousness
and
appellant has not successfully rebutted it. Also, appellant
has not argued any specific claim apart from any other so all
claims will stand or fall together.
More specifically, with regard to independent claim 1 and
the application of Walter thereto, Walter discloses the
monitoring of an automation system, i.e., a fire alarm system,
wherein locations of activated sensors are monitored. The
layout of the building is known and stored, which allows
“accessing important planning and design data of the
automation system” wherein information is available on all
possible sensor locations. The enablement of the positions of
the sensors to be superposed on the visual displays generated
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Application No. 08/040,053
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by each image file [column 2, lines 39-45 of Walter] is
tantamount to the comparison of codes recited by claim 1.
Thus, contrary to appellant’s assertion, we find that
Walter does, indeed, disclose the monitoring of an automation
system by determining a location of a fault (the location of a
fire sensor) in the system and displaying the determined
location of the fault first coarsely and then in at least one
other step in a more detailed manner. We note column 6, lines
15-27 of Walter wherein the option of zooming in on the
location of the actuated sensor
on the display or for looking at details of other sensors
appears to suggest the claimed “coarsely” and “more detailed
manner” limitations.
Appellant also argues [top of page 9 of the brief] that
Walter does not monitor the electronics between the sensors
and the control panel and the control panel itself is not
monitored. We find no such limitations required by the
claims. Thus, appellant’s argument is not commensurate with
the scope of the claims. The fire sensors of Walter certainly
are within Walter’s automation system so appellant’s argument
that Walter does not disclose or suggest any determination or
Appeal No. 96-2518
Application No. 08/040,053
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display of a location of a fault which is in the automation
system [brief-page 9] is not understood. Appellant’s
arguments regarding Woods are not relevant to the rejection of
any claims but for claims 6 and 19 and appellant has not
separately argued the merits of these claims.
We have sustained the rejection of claims 1 through 20
under 35 U.S.C. 103 but we have not sustained the rejection of
claims 1 through 20 under 35 U.S.C. § 112, first paragraph.
Accordingly, the examiner’s decision is affirmed.
Appeal No. 96-2518
Application No. 08/040,053
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Anita Pellman Gross )
Administrative Patent Judge )
tdc
Appeal No. 96-2518
Application No. 08/040,053
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